Tuesday, October 01, 2013

The Board affirmed a Section 2(a) refusal to register the mark THE SLANTS for "entertainment in the nature of live performances by a musical band," finding that the mark, when used in connection with applicant's services, would be perceived as disparaging to a substantial composite of the reference group, namely persons of Asian descent. In re Simon Shiao Tam, 108 USPQ2d 1305 (TTAB 2013) [precedential].

Relying on dictionary definitions, online articles, and applicant's own webpage and Wikipedia entry, Examining Attorney Mark Shiner maintained that THE SLANTS is a highly disparaging term to people of Asian descent, that it retains that disparaging meaning when used in connection with applicant’s services, and that a substantial composite of the referenced group finds it to be disparaging.

Applicant contended that the PTO failed to prove that the mark is "inherently offensive," since the word "slant" has several meanings and is therefore not "inherently disparaging." He challenged the propriety of the PTO's consideration of the manner in which applicant used the mark, asserting that the refusal was "dependent on the identity of the person, rather than the content of the application." According to applicant, the analysis should be limited to the "four corners" of the application, and consequently the PTO improperly considered applicant's ethnicity and his use of the mark in reaching its conclusion.

The Board pointed out that the determination of whether a mark is disparaging under Section 2(a) requires application of a two-part test:

1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. In re Lebanese Arak Corp., 94 USPQ2d 1215, 1217 (TTAB 2010).

The Board first considered the likely meaning of THE SLANTS. Although the term may have innocuous meanings, when the identified services are taken into account the term necessarily identifies people, and those that attend the live performances will understand the term to refer to the band members. Not only does THE SLANTS have the "likely meaning" of persons of Asian descent, but the evidence showed that the meaning has been so perceived and has prompted negative responses by prospective attendees or hosts of the band's live performances. This evidence thus demonstrated that the meaning of THE SLANTS is a derogatory reference to people of Asian descent.

Applicant's musical group promotes this "likely meaning" of the mark in its advertising and on its website, displaying the words THE SLANTS adjacent a depiction of an Asian woman accompanied by stylized rising sun imagery and a stylized dragon.

The Slants album cover

In fact, applicant actively sought to associate his services with this meaning as a way of embracing the slang meaning and to "own" the stereotype represented by THE SLANTS. However, even if applicant is willing to take on the disparaging term as a band name, that does not mean that all members of the referenced group share his view. See In re Heeb Media LLC, 89 USPQ2d 1071 (TTAB 2008) (applicant's good intentions and inoffensive goods and services do not prevent finding that HEEB is disparaging; mixed opinion among members of the referenced group does not erase the perception of a substantial composite who find it disparaging). In short, applicant does not speak for the entire Asian community.

The Board deemed it important to note that a finding that THE SLANTS is disparaging does not depend on applicant's ethnicity but on the circumstances relating to his use of the mark. "An application by a band comprised of non-Asian Americans called THE SLANTS that displayed the mark next to the imagery used by applicant ... would also be subject to a refusal under Section 2(a)."

In his complaint that the PTO improperly went outside the "four corners" of his application in order to consider his manner of use of the mark, applicant ignored the first prong of the applicable test for disparagement. The "manner of use" necessarily requires looking beyond the contents of the application itself. Were that not the case, the Examining Attorney pointed out, a clever applicant could easily craft an identification of goods and submit a specimen of use that avoided any mention of the group referenced by the term, while at the same time using the mark in a disparaging manner.

Turning to the question of whether THE SLANTS is disparaging to a substantial composite of the referenced group, the Board noted the evidence of record indicating that individuals and groups in the Asian community have objected to applicant's mark. As a whole, the record contained "substantial evidence to support the refusal."

Finally, the Board observed that the refusal to register does not affect applicant's right to use the subject mark, but only his right to register.

This case is solely about whether the applicant may 'call upon the resources of the federal government' to obtain federal registration of the mark on the Principal Register in order to assist in enforcement of the mark. See In re Fox, 105 USPQ2d 1247, 1252 (Fed. Cir. 2012).

TTABlog note: Ron Coleman, counsel for applicant and noted blogger, comments here (as well as in the comment section of this posting), and reports that applicant will appeal to the CAFC.

What does this case portend for the pending REDSKINS cancellation proceeding? Remember that in that case, the petitioners must prove disparagement as of the respective dates of issuance of the subject registrations (from 1967 to 1990). That may make their task a bit more difficult.

15 Comments:

John, thanks for covering this. As you know I represent the applicant, and I would be very interested in your view and that of other commenters here on certain points that the TTAB opinion, with all due respect, has obscured.

Though we made a pass at arguing the contrary, for which there is authority, it is pretty clear that an examining attorney can and should go outside the four corners of the application to examine how a mark is (present tense) being used in the market in order to make certain determinations. (As my brief, linked to at my blog, explains, that is only certain determinations.) We argued that the record here demonstrates that the examining attorney did no such thing here -- at least not concerning this application.

What the examining attorney did do, however, was cut and paste the results of his diligence on the "use of the mark" issue from the previous, and very different, application. The examining attorney had the opportunity to elicit new evidence regarding use to rebut or contradict the application, which was completely free of the forbidden Asian associations, and failed to do so. So there was no new evidence regarding the mark's use whatsoever, we argued; hence our claim that this refusal amounts to a sort of trademark bill of attainder against a certain applicant: He is personally barred from obtaining this registration because of his past "unacceptable" ethnically-oriented use. I don't believe the TTAB addressed this concern head-on.

There are other issues we could discuss, too, but as a starting point I will be very interested in seeing what people think of this issue.

Very annoying decision. There has to be room for irony in language, and the trademarks, comprised thereof. I think it's time to reinterpret 2(a). We should get involved where there is actual offense being levied and received - talking to you, Dan Snyder, and allow oppressed groups to reclaim the offensive language for social commentary (and yes profit springing therefrom). No more Board as Basiji!

For Becky and others who believe Section 2(a) shouldn't apply where an applicant claims he is a member of the disparaged group and that he intends to "reclaim" or "own" the disparaging term, I have to wonder if they've thought this through. How does that work in practice?

Consider: Applicant applies for NIGGER for widgets. The Examining Attorney issues the refusal under Section 2(a). Is it enough for Applicant to state (in a declaration?) that he is black and intends to reclaim the term "nigger"? Does the EA need to see proof Applicant is black or some proof of his intent to reclaim? Does the EA issue an office action stating, "This Section 2(a) refusal will be withdrawn if Applicant submits acceptable proof that he is black."? Does it come down to the EA scrutinizing a photograph of our hypothetical Applicant to determine if he's "black enough" to get the registration? Is the resulting registration automatically invalidated if it's assigned to someone not black enough (presumably as later determined in litigation)? What if it's assigned to a corporation?

Putting aside, for a moment, the evidence of use of the mark, I think THE SLANTS, for a musical band would be found to be disparaging anyway, regardless of who the applicant was. As the Board noted, THE SLANTS, when used in connection with those services, refers to the people in the band, and therefore its meaning is disparaging about people.

If the mark were simply SLANT or even THE SLANT, the story would be different, I think.

Moreover, I think the Board and the PTO are allowed to look at past usage in connection with discerning the meaning of the term THE SLANTS, and the public's reaction to it.

That's a fine line to say that a plural form of something is less disparaging than the singular. The term actually refers to the musical chords we use (slant guitar chords) and the collection of our individual perspectives - the USTPO distorted the quote used in the article they're referencing.

If you want to look at evidence of positive response, look at our original filing with over 2k pages of evidence, etymology experts, Asian American activists, national surveys, etc.

In this case with the USPTO, they've proved that anyone can trademark "slant" as long as you're not Asian (or me).

For the anonymous comment - the difference between "Nigger" and "slant" is quite substantial, as the word "slant" is a neutral one with no inherently offensive connotations. Many "racial slurs" can be otherwise neutral - the problem is that if the USPTO is going to use the applicant's race in rejecting trademarks, they are doing even more harm.

For example, several people hold trademarks for the term "chink," a term used in logging. What if a Chinese American applied for the term and had a photo of himself as owner of the company on the website? Would the USPTO say that the photo or owner was connected to the product/service, therefore it was a racial slur and non-trademarkable?

The argument for the trademark isn't that I am Chinese, therefore I deserve it, it's that they shouldn't be making a decision based on my ethnicity at all. They didn't bother looking at the contents of the application.

Simon, my point was not about NIGGER, THE SLANTS, SLANT, or any other mark -- whether it is said to be "inherently offensive" or not.

My point was that if Section 2(a) is reinterpreted to exclude members of a group who are trying to "reclaim" or "own" a term, that opens up a whole host of messy issues, such as EAs having to make determinations about whether an applicant is in fact a member of the group allegedly disparaged. This has nothing to do with whether a term is inherently offensive or whether the Board's decision here was correct.

Unfortunately, that misses the pint in our case. Despite what was said in the TTAB ruling (based on a quote out of context), our intent is not to "reclaim." Whether it was or not though, Section 2(a) is already riddled with messy issues. If a person is charged with it, whether or not they are a member of the referenced community, judgements are based on incredibly vague, subjective standards based on the examining attorney's opinion, not any real facts.

In my case, the examining attorney chooses to argue the wrong case entirely, choosing to assume that our argument was based on self-reference and re-appropriation. It wasn't. There wasn't a single mention of it in our case.

However, Todd Anten makes some great points about self-referntial marks in his essay, "Self-Disparaging Trademarks and Social Change: Factoring the Reappropriation of Slurs into Section 2(a) of the Lanham Act"

An even better one that looks at the many problems with the Lanham Act is "Calling Bullshit on the Lanham Act: The 2 (a) Bar for Immoral, Scandalous, and Disparaging Marks" from Megan M. Carpenter and Kathryn T. Murphy.

John, you wrote, "I think the Board and the PTO are allowed to look at past usage in connection with discerning the meaning of the term THE SLANTS, and the public's reaction to it." It is clear that it is. My question is, how far back is that look-back period? Here both the PTO and the Board relied on an evidentiary case regarding use and public reaction (the latter very, very poorly sourced, by the way) based on an earlier application. Is there no point at which that becomes stale information? If not, then isn't it so that this ruling amounts, as I have said, to a per se determination that Simon Tam may never be granted this registration?

Ron, that is a good question. But if your client claims a first use date in 2006, then he will bring into the picture his past use.

Is he, per se, barred from registration of THE SLANTS for a band because of his past behavior? I don't get to that question, because I think THE SLANTS as a mark for a band is per se disparaging, reqardless of who applies, because it refers to persons, and calling persons SLANTS is disparaging.

His past behavior only added to the PTO's evidence and made the decision in his case that much stronger.

Well, John, the PTO relied on the evidence of his "past behavior" quite a bit in its denial, and the TTAB did the same in its affirmance.

I think the only way to defend this outcome, in fact, is to say, as you do, that THE SLANTS "as a mark for a band is per se disparaging, reqardless of who applies, because it refers to persons, and calling persons SLANTS is disparaging." If that had been the PTO's decision, we could have readily rebutted it, because its evidence was very, very poor on the point. I noted this in my brief, but did not provide our own countervailing evidence because this seemed very unlikely to be considered.

But it seems clear to me the decision does rely, quite explicitly, on the identity of the person who is applying. And that is a big problem.

I am not sure why you think "THE SLANTS" when used in connection with a band MUST refer to the people in the band. There are lots of bands named THE [X]S where the name seemingly does not refer to the members of the band. The Eagles. The White Stripes. The Black Keys. The Yeah Yeah Yeahs. The Names. The Flaming Lips. The Pogues. The Mountain Goats. The Hollies. The B-52's. Etc.

Anonymous, I have to admit that I always assumed that bands with names like that were in fact identifying themselves, however whimsically, as individuals who somehow have the quality associated with those collective nouns. See, for example, this LA Times article referring to Glenn Frey as a "prominent ex-Eagle."

Of course, in that case the band identity -- Eagles -- works backward to make each member "an Eagle" by virtue of membership. But I think the concept is an assertion of eagle-like quality by the band as a whole. Or something.

Which makes me think of something near and dear to John Welch's heart that must have been addressed somewhere on this blog in history, because it does have trademark implications: The back-formation of a member of the "the Red Sox" to "a Red Sock."